Case 2:20-cv-00337-JRG Document 81 Filed 04/19/21 Page 1 of 7 PageID #: 2684
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`SEAGEN INC.,
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`v.
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`DAIICHI SANKYO CO., LTD.,
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`Plaintiff,
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`Defendant.
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`ORDER
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`CIVIL ACTION NO. 2:20-CV-00337-JRG
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`Before the Court is Plaintiff Seagen Inc.’s (“Seagen”) Motion to Compel Daiichi Sankyo
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`Co., Ltd.’s Discovery Responses and Production (the “Motion to Compel”). (Dkt. No. 58). In the
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`Motion to Compel, Seagen seeks certain discovery from Defendant Daiichi Sankyo Co., Ltd.
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`(“DSCL”) related to DSCL’s co-pending Rule 12(b) Motion to Dismiss for Lack of Subject Matter
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`Jurisdiction and Lack of Personal Jurisdiction (the “Motion to Dismiss”) (Dkt. No. 24) and Motion
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`to Transfer Under 28 U.S.C. § 1404 to the District of Delaware (the “Motion to Transfer”) (Dkt.
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`No. 25). Having considered the Motion to Compel, and having reviewed the bases of DSCL’s
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`Motion to Dismiss and Motion to Transfer—on which the Court presently expresses no opinion—
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`the Court is of the opinion that the Motion to Compel should be GRANTED-IN-PART and
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`DENIED-IN-PART, as stated herein.
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`DISCUSSION
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`I.
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`Document Request No. 2
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`First, Seagen moves to compel the following discovery:
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`All documents related to the relationship between DSC and any DSC Affiliate,
`including without limitation, Daiichi Sankyo, Inc., that has any role in any
`distribution chain(s) established for the purpose of bringing the ENHERTU®
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`product to the U.S. market, including without limitation, organizational charts for
`DSC and any such DSC Affiliate.
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`(Dkt. No. 58-1 at 1). Seagen also moves to compel a response to a corresponding interrogatory and
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`Rule 30(b)(6) testimony on a corresponding topic. (Id.). The Court is persuaded that the discovery
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`sought by Seagen is relevant and proportional to the issues placed in controversy by DSCL in the
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`Motion to Dismiss and Motion to Transfer. However, such discovery should be temporally limited
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`to the period of alleged infringement—in this case, after issuance of the sole asserted patent. (See
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`Dkt. No. 1).
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`DSCL objects, largely on the basis that DSCL is a Japanese entity that allegedly
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`manufactures vials of ENHERTU (the accused product in this suit) in bulk and sells them to
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`non-party affiliate Daiichi Sankyo Inc. (“DS US”), which actually distributes and sells the accused
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`product in the United States. (Dkt. No. 60 at 2–3). This argument places the cart before the horse.
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`These facts form the basis of DSCL’s arguments in its Motion to Dismiss and Motion to Transfer.
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`They are not themselves a basis to avoid discovery on which facts control those motions. Seagen
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`is entitled to test the veracity of these facts and to discover other probative evidence that may
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`counterbalance DSCL’s contentions.
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`The Court does not agree with DSCL that its agreement to produce “[d]ocuments
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`sufficient” to establish the facts that it contends are controlling would satisfy its discovery
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`obligations. Seagen is entitled to discover “any nonprivileged matter that is relevant to any party’s
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`claim or defense and proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1). Personal
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`jurisdiction embraces the universe of potential contacts from which the cause of action arises or to
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`which it relates. See Ford Motor Co. v. Montana 8th Judicial Dist. Ct., 141 S. Ct. 1017, 1026
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`(2021). Seagen is entitled to a fair chance to discover those contacts and attempt to meet its burden
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`under the minimum-contacts test. Likewise, convenience is a multifaceted inquiry embracing
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`2
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`Case 2:20-cv-00337-JRG Document 81 Filed 04/19/21 Page 3 of 7 PageID #: 2686
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`several public and private interest factors. In re Volkswagen AG, 371 F.3d 201, 202–03 (5th Cir.
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`2004); In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc). Seagen is
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`entitled to discover evidence relevant to the convenience analysis.
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`However, the temporal scope of such relevance is not unlimited. Contacts for specific
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`personal jurisdiction must arise out of or relate to the cause of action. Ford, 141 S. Ct. at 1026.
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`Here, the cause of action is patent infringement, and activities prior to the issuance of a patent
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`cannot give rise to a claim for patent infringement. See NexLearn, LLC v. Allen Interactions, Inc.,
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`859 F.3d 1371, 1377 (Fed. Cir. 2017) (“contacts predating the issuance of the [asserted] patent are
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`not relevant contacts for establishing specific jurisdiction”). Likewise, whether to transfer a case
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`for convenience bears primarily on post-complaint matters—such as the location of documentary
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`evidence and witnesses, subpoena power, court congestion, the localized interest in the case,
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`choice of law, and other factors that make trial efficient and expeditious. In re Volkswagen AG,
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`371 F.3d at 202–03; In re Volkswagen of Am., 545 F.3d at 315 (5th Cir. 2008). In this case, the
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`issuance of the asserted patent and the filing of the complaint were virtually contemporaneous.
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`Accordingly, the Court will limit the scope of the discovery ordered herein to evidence of facts
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`that post-date the issuance of the asserted patent.
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`Document Request No. 3
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`Next, Seagen moves to compel the following discovery:
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`Documents sufficient to show DSC’s gross revenues in U.S. dollars on a monthly
`basis from sales of ENHERTU® to each entity that sells or distributes ENHERTU®
`in Texas, the identity of each such entity, and the quantity of sales made in Texas
`by each such entity.
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`(Dkt. No. 58-1 at 2). Seagen also moves to compel a response to a corresponding interrogatory and
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`30(b)(6) testimony on a corresponding topic. (Id.). DSCL objects on similar grounds as it does to
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`3
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`Document Request No. 2. For similar reasons, that objection is without merit. Notably, the
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`production DSCL agreed to (Dkt. No. 60-1 at 2) only addresses DS US and does not address DSCL
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`itself. It also does not address sales of the accused product in Texas, which is the relevant inquiry
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`for personal jurisdiction and may also be relevant to some of the factors for convenience. The
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`Court is persuaded that this requested discovery is relevant and proportional to the issues in
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`controversy in the Motion to Dismiss and Motion to Transfer. However, such discovery should be
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`temporally limited to the period of alleged infringement.
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`Document Request No. 4
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`Next, Seagen moves to compel the following discovery:
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`All agreements between DSC or any DSC Affiliate, including without limitation,
`Daiichi Sankyo, Inc., on one hand, and any person that sells or distributes
`ENHERTU® in Texas, on the other hand, and all documents related to DSC’s role
`in the procurement, negotiation, execution, and/or performance of the foregoing
`agreements.
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`(Dkt. No. 58-1 at 2–3). Seagen also moves to compel a response to a corresponding interrogatory
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`and 30(b)(6) testimony on a corresponding topic. (Id.). DSCL objects on similar grounds as it does
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`to Document Request Nos. 2 and 3, and for similar reasons, those objections are without merit.
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`The Court is persuaded that Seagen’s discovery requests are relevant to the issues in controversy
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`in the Motion to Dismiss and Motion to Transfer. However, such discovery should be temporally
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`limited to the period of alleged infringement.
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`Document Request No. 5
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`Next, Seagen moves to compel the following discovery:
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`All documents related to the activities of DSC, any DSC Affiliate, including
`without limitation, Daiichi Sankyo, Inc., or their distributors or sellers in Texas
`relating to the research, development, testing, manufacture, marketing, use,
`importation, sale, and/or offer to sell of ENHERTU®, including without limitation,
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`4
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`the identity (by full name, job description, and location of residence and work) of
`each current and former DSC or DSC Affiliate employee or contractor residing or
`working in Texas with personal knowledge (whether such knowledge is uniquely
`held by the individual or not) about the features, composition, functionality,
`marketing distribution, and/or sales of ENHERTU® or that is or was involved in
`the research, development, testing, manufacture, marketing, use, importation, sale,
`and/or offer to sell of ENHERTU®. This includes telecommuters.
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`(Dkt. No. 58-1 at 3–4). Seagen also moves to compel a response to a corresponding interrogatory
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`and 30(b)(6) testimony on a corresponding topic. (Id.). DSCL objects on similar grounds as it does
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`to Document Request Nos. 2, 3, and 4. For similar reasons, those objections are without merit. The
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`Court is persuaded that Seagen’s discovery requests are relevant to the issues in controversy. For
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`example, convenience to potential party and non-party witnesses are important factors for the
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`convenience analysis. This discovery request is therefore appropriate. Such discovery should be
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`temporally limited to the period of alleged infringement.
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`Document Request No. 6
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`Next, Seagen moves to compel the following discovery:
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`All documents relating to DSC’s assertion, in its Motion to Transfer Under 28
`U.S.C. § 1404 to the District of Delaware (ECF No. 24 at 3), that: “In 2015, Daiichi
`Sankyo Japan terminated the Agreement and continued with its own independent
`ADC research, which led to the discovery of Enhertu®.”
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`(Dkt. No. 58-1 at 4–5). Seagen also moves to compel 30(b)(6) testimony on a corresponding topic.
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`(Id.). DSCL objects, contending Seagen has not indicated the relevance of the requested discovery.
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`Seagen contends that (i) these documents are relevant to the convenience factor relating to the
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`location of documentary evidence; and (ii) these documents are relevant to the merits of the case,
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`and their production should not be postponed. (Dkt. No. 58 at 7).
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`The Court is not persuaded that production of these documents themselves at this time is
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`necessary to establish their location. Accordingly, the Court will not order their production at this
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`5
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`time and on this basis. However, the Court will grant Seagen leave to serve a targeted interrogatory
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`on DSCL limited to addressing issues such as the number, nature, and location of such documents
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`to the extent relevant to the issue of convenience.
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`30(b)(6) Topic No. 7
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`Last, Seagen moves to compel 30(b)(6) testimony from DSCL regarding:
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`The facts and bases for such facts set forth in the January 5, 2021 Declarations of
`Hiroaki Miki, Daniel Switzer, Kevin Smith, and Albert Bucci, submitted with
`DSC’s Motion to Transfer Under 28 U.S.C. § 1404 to the District of Delaware (ECF
`No. 24).
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`(Dkt. No. 58-1 at 4–5). Mr. Miki is an employee of DSCL. (Dkt. No. 24-1). Mr. Switzer and Mr.
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`Smith are employees of non-party DS US. (Dkt. Nos. 24-2, 24-3). Mr. Bucci is an employee of
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`non-party AstraZeneca Pharmaceuticals LP. (Dkt. No. 24-4). Seagen contends it is necessary for
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`DSCL’s 30(b)(6) witness to testify on the assertions made in these declarations because DSCL
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`relies on them. (Dkt. No. 58 at 7). DSCL agreed to designate a corporate representative to testify
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`as to the facts and bases stated in Mr. Miki’s declaration. (Dkt. No. 60 at 7). However, DSCL
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`contends it is more appropriate for the non-party declarants to provide 30(b)(1) deposition
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`testimony on the contents of their declarations. (Id.). The Court agrees with DSCL that it would
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`be unnecessary and duplicative (in the least) for DSCL’s corporate representative to testify about
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`facts contained in declarations of non-party employees. As Messrs. Switzer, Smith, and Bucci have
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`already been subpoenaed for 30(b)(1) testimony and have agreed to comply with the same, the
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`Court believes such testimony to be sufficient for Seagen’s purpose in responding to the Motion
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`to Dismiss and the Motion to Transfer. Accordingly, the Court will not order DSCL’s corporate
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`representative to testify on the contents of the Switzer, Smith, and Bucci Declarations. However,
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`6
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`the Court will order DSCL’s corporate representative to testify on the contents of the Miki
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`Declaration.
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`II.
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`ORDER
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`Accordingly, the Motion to Compel is GRANTED-IN-PART and DENIED-IN-PART.
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`It is hereby ORDERED as follows:
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`• As to Document Request Nos. 2–5, the Motion to Compel is GRANTED, and DSCL
`shall produce the requested discovery, temporally limited to the period of alleged
`infringement.
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`• As to Document Request No. 6, the Motion to Compel is DENIED, but Seagen has
`leave to serve a targeted interrogatory on DSCL limited to addressing issues such as
`the number, nature, and location of such documents as is relevant to the issue of
`convenience.
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`• As to 30(b)(6) Topic No. 7, the Motion to Compel is GRANTED as to the declaration
`of Hiroaki Miki and DENIED as to the other declarations. DSCL shall produce a
`corporate representative to testify as to the bases and facts contained in the Declaration
`of Hiroaki Miki.
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`The parties are further ORDERED to meet and confer and, within seven (7) days, file a
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`joint proposed schedule for (i) the discovery ordered herein; and (ii) any necessary supplemental
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`briefing on the Motion to Dismiss and Motion to Transfer (limited solely to new matters raised in
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`such discovery).
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`Seagen’s Unopposed Motion for Oral Hearing Regarding the Motion to Compel (Dkt. No.
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`71) is DENIED AS MOOT.
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`7
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`.
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 19th day of April, 2021.
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